Patent Engineering Berkeley-Lavian

Week 2 1

Patent Engineering IEOR 190G

CET: Center for Entrepreneurship &Technology

Dr. Tal Lavian(408) 209-9112

Tlavian@cs.berkeley.edu

225A BechtelMondays 4:00-6:00

Patent Innovations-Berkeley-Lavian

2nd week 2

Some administrations • Sign up for your presentation date• 3 units class

– All students participate, 4-6 students work on the project – Registration over at Telebear – same registration as for the 2

units

• Wednesday Oct 8th – instead of Monday Oct 6th • Taking the deposition – at the Law School

• Subject line on your emails to me:• “IEOR 190G” – your subject line

• Field Trip to Court at SF• Dyslexia

Patent Engineering-Berkeley-Lavian

Week 2 3

Patent Engineering Course • This is an engineering class not a law class• The course broadly covers patents as a

business tool • The use of intellectual capital for competitive

advantage • Protection and commercialization of engineering

and scientific intellectual assets • Examination of several patent litigation case

studies• focus on invention, innovation, patent and strategy

Patent Innovations-Berkeley-Lavian

Week 2 4

What we will do in this course? • Mondays 4:00pm - 6:00pm

• Please be on time• Starts today - ends on May 11th• Patent – innovations, engineering, and strategy • Industry lectures • Few classes with the Law School • Students “experts witnesses” • Field trip – court visit SF or Oakland

Patent Engineering-Berkeley-Lavian

Week 2 5

What We Will Cover? • Overview of the Patent System• Publication, Public Use, and On-Sale

Limitations• Enablement and Best Mode Requirements • Utility, Provisional, and PCT Application • Novelty and Unobviousness Requirements • Avoiding Patent Infringement• Patentability and Infringement Comparison• Strategies for Engineers who are Witnesses

or Experts in Patent Lawsuits

Patent Engineering-Berkeley-Lavian

Week 2 6

Reading last week

• Patently-O• Mailing list• Other patent blogs

Patent Engineering-Berkeley-Lavian

Week 2 7

Who are you? • Send me email with the information

• Tell us about yourself:• In about 60 seconds• Your name, education, experience• Goals for future • What should we know about you• Your patent, invention background experience

• What do you know about patents?• How many patents have you read?

• Why are you here?• What you would like to accomplish?

• Send me email with this info

Patent Engineering-Berkeley-Lavian

Week 2 8

Grading - Attendance

• 2 units credit course – (no 1,3,4)• You will be fine - • Pass/Fail (it would be very hard to fail)

• Passing grade – requires attendance at all lectures (with one allowed unavoidable absence)

• Sign in for the class • Patent blogs and mailing lists • Students presentations – 15 min• Prior Art search

Patent Engineering-Berkeley-Lavian

Week 2 9

Students Presentations • Present in 10-15 min a patent litigation case • Case summary

• Parties, dates, history, issue in dispute, results • Engineering aspects of the dispute

• The patent(s), technology, product• Engineering aspects of the infringement • The engineering view vs. the legal view

• Any proposed design around

Volunteers to start next week

Patent Innovations-Berkeley-Lavian

2nd week 10

Students Presentations

• Some examples from last semester: http://www.cs.berkeley.edu/~tlavian/spring2008/patentEngineering.html

Patent Innovations-Berkeley-Lavian

2nd week 11

Today’s Student’s Presentations

• Immersion vs. Sony - Abhinav Gupta• Invitrogen Biotechnology - Christine

Patent Engineering-Berkeley-Lavian

Week 2 12

Example of a patent

• Cover page• Diagrams• Writing description• Claims

Patent Engineering-Berkeley-Lavian

Week 2 13

Intro to Patent Engineering

Patent Engineering-Berkeley-Lavian

Week 2 14

Types of Intellectual Property

• Patents– protect ideas

• Copyrights– provide the author the right to reproduce, display,

perform• Trade Secrets

– information kept secret and has economic value • Trademarks & Service Marks

– marks used in commerce identifying origin of goods

Patent Innovations-Berkeley-Lavian

2nd week 15

Recent Patent Verdicts & SettlementsOr – Why it is really important?

• Alcatel/ Lucent v. Microsoft. - (2007) - $1.5 Billion • NTP – Settled with RIM for $612M (plus $53M litigation plus verdict)• Intergraph – over $880M in settlement from patent litigation with Intel, HP

and others• Eolas v. Microsoft (2003). $506M Jury verdict• Immersion v. Sony (2004). $82M jury verdict plus royalties

– increased (2007) to $150M– vibration game controller - Microsoft settlement on $26

• Freedom Wireless v. BCGI (2005) $128 jury verdict• Finisar v DirectTV (2006). 103M (79+24)Jury verdict plus injunction • Tivo v. EchoStar (2006). $74M jury verdict plus injunction • Acacia - $60M in licensing revenue (2004-2—6)• Forgent - $100M in licensing revenue 2004-2006

Bell Labs Case - The Technology

Late 1980’s, Inventors James Johnston and Joseph Hall (Bell Labs, division of AT&T)

Quantizing noise – approximation of continuous range by values by relatively small set of discrete values.

Invented method and apparatus to produce quantized audio signal using interpolated scale factor.

V.V.

Advantage - Data compression – Same or similarsignal can be represented with less data

Bell Labs Patents

• Filed: Dec 1988 • Assignee: Bell Laboratories• U.S. Patent No. 5,341,457, Perceptual

Coding of Audio Signals, to Joseph L. Hall and James D. Johnston (Dec 1988)

• U.S. Reissue Patent No. RE39,080, Rate loop processor for perceptual encoder/decoder, to James D. Johnston (Dec 1988, Reissued Sep 1994)

Bell Labs MS Case

• In 2003, Lucent files suit against Gateway, Dell, and eventually Microsoft in U.S. District Court, San Diego, CA.

• Claim: Infringed two patents developed by Bell Labs in MP3 compression and playback within Microsoft Windows Media Player

• Sought 0.5% royalty of total Windows computers sold

The Case

• Microsoft claims:• Received license for MP3 technology from

Fraunhofer Institute (Bell Lab’s parent research organization) for flat $17 million.

• Loop processor not applicable for WMP application.

• 0.5% rate exorbitant! “Only one of 10,000 features”

..

The Results• Ruling agreed that patents were developed by

Bell Labs before joining with Fraunhofer to create MP3

• Rights to patents exceeded value of $17 million paid for license

• February 22, 2007, Alcatel-Lucent awarded record $1.5 billion in damages from Microsoft. Jury unable to find ‘willful’ infringement for $4.5 billion damages.

• August 6, 2007, Microsoft granted retrial. Verdict overturned based on insufficient evidence by Judge Rudi Brewster.

..

PatentEng-Berkeley-Lavian 2nd week 21

Patent History• Created by Congress in 1790

– “…to promote the progress of science and the useful arts by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

• Article 1, Section 8• July 31, 1790 – 1st Patent

– Samuel Hopkins patents potash– Cost : $4.00

• Reviewed by Cabinet Members– Thomas Jefferson – Secretary of State– Henry Knox – Secretary of War– Edmund Randolph – Attorney General– George Washington – President

www.uspto.gov, www.ipo.org

Patent Engineering-Berkeley-Lavian

Week 2 22

More Patent History• 3 Patents Awarded in 1790

– First patent law enacted• 1802 – US Patent and Trademark Office

Created– Responsibility of granting patents/registering

trademarks• Atomic Energy Act of 1954

– Excludes nuclear purposes/atomic weapons• American Inventors Protection Act (1999)

– Most recent revision of patent laws• New Legislation debate - 2008

Patent Engineering-Berkeley-Lavian

Week 2 23

US Constitution

• Rights are derived directly from US constitution, Article 1, section 8– granting congress the power to promote the

progress of science and useful arts by securing for a limited time to authors and inventors the exclusive rights to their respective writings and discoveries

Patent Engineering-Berkeley-Lavian

Week 2 24

What is a Patent?

• A form of intellectual property• A grant of property right to an inventor by the

government• Prevents the invention from others for the duration

of the patent • In return, the inventor must fully disclose the

details of the invention to the public

Patent Engineering-Berkeley-Lavian

Week 2 25

What is a Patent? (Cont.)

• Right to Exclude the Making, Using, Selling , Offering for Sale or Importation of a Specified Invention– Limited Time (Typically 20 Years from date

of filing with USPTO)– Limited Geographic Territory (issuing

country)• Monopoly awarded by the Government for

sharing the Invention with the public

Patent Engineering-Berkeley-Lavian

Week 2 26

Protecting the Idea

• Protecting the idea, not the embodiment• Allowed to claim broader than the physical

embodiment • Protection:

– Limited rights during the life of the patent • Filing to end• Issue to end